TRADEMARK OBJECTION REPLY SECTION 11

Introduction 

Registered trademark confers a right to use the mark on the goods and services that are being provided and cannot be used by any other person. In certain cases, registrar can raise objection in granting of the trademark.

Trademark objection is one of the stages of trademark registration process. If the registrar is of the opinion that the application for registration of the trademark is similar to that trademark that is already registered or is not of distinctive character or it is difficult in distinguishing from the goods and services of one person from another person, then the registrar shall mark the application as objected.

Trademark Registration

Section 18 of the Trademark Act, 1999 states the process of registration of trademark. It takes around one to two years after filing an application for registration of the trademark to get it registered. After filing an application an allotment number is allotted through which you can check the status of your application.

The steps for registration of the trademark are as follows:

1. Firstly, the mark will be sent for Vienna codification.

2. It will be checked, whether or not all formalities are fulfilled i.e. all the documents required are filed.

3. Then, it is sent for an examination where it well be examined, is there any infringements of provision(s) of the Act.

4. If no issues are found then examination report is issued.

5. Thereafter, mark is published in official gazette i.e. the Trademark Journal.

6. It will be open in the public for three months and may be extended for one extra month to raise an objection against it.

7. If no objection is raised then the trademark will get registered and registration certificate will be given to the applicant and he will get protection for ten years from the date of its filling.

Grounds of opposing

1. Absolute grounds are stated in Section 9 of the Trademark Act, 1999. They are as follows:

• If the mark is not differentiating the goods or services from those of another person;

• If the mark indicates the kind, quantity, quality, purpose, geographical origin, values, or rendering services or other characteristics of goods and services;

•  If it consists exclusively of marks or indications which have become customary in the current language or in the bona fide and established practice of the trade;

• If the mark creates the confusion or deceive the public;

• If it contains or comprises of any matter that can hurt the religious feelings of any class or section of citizens of India;

• If it consists of any scandalous or obscene matter;

• If it violates the Emblems and Names (Prevention of Improper Use) Act, 1950.

2. Relative grounds are stated in Section 11 of the Trademark Act, 1999.

If there is a possibility of confusion in identifying the trademark with an earlier trademark or similarity of goods and services on the part of the public then objection can be raised on it.

3. Other Common grounds are:

• Using wrong form for filing online trademark registration; 

• Vagueness in specification of goods and services;

• Wrong/incorrect information entered in the application;

• Incorrect classification of trademark class, etc.

Reply to an objection

If an objection is raised then notice will be given to the applicant mentioning the grounds of objection.

1. Filing of counter statement is first thing to do.

2. This must be filed within one month and may be extended by one another month.

3. If it is not filed within the mentioned time frame then the status of the application will be changed to abandoned.

When the counter statement is filed, the registrar may call the applicant for hearing, if he rules in favour of the applicant. And if the registrar rules in the favour of the opposing party, the mark will be removed from the journal and the application of it be get rejected. The appellant, further may file an appeal at Intellectual Property Appellate Board.

The appeal against an order shall be filed within three months from the date on which the order was passed. If there is delay in filing of an appeal, the applicant shall mention the reason for such delay along with the fine. If the Intellectual Property Appellate Board accepts the reason, the appeal will be heard. The rules for filing the same are prescribed in Trademark (Applications, Appeals and Fees to the Intellectual Property Appellate Board).

The Deputy Registrar shall endorse the application on the date on that it is presented. If any defect is found by him then he must give notice of the same to the applicant. The applicant shall resubmit the application after making the correction within two months. If he fails to do so the application status will be changed to abandoned. If the Deputy Registrar finds the application in order then the case will be registered and serial number will be allotted to it.

Further, rule 2(m) states the jurisdiction where the case will be heard. The hearing date of the case will be given and if any of the party fails to be there on the date of the hearing then the Intellectual Property Appellate Board can-

1. Decide the case on its merits

2. Can give an ex parte order

3. Dismissing of the case can be done.

If the case is dismissed or an ex parte order is passed then the time of 30 days is given to file a petition against the order from the date of such order. Then the board will hear the case. If the applicant is aggrieved by the order given by the board, he can appeal in the High Court having the jurisdiction and further to the Supreme Court.

Conclusion 

Registration of the trademark for any business is very crucial step. for any person or a company that wants to create a brand, the foremost important thing for them is to register the trademark timely in accordance with in rules and provisions specified in the Trademark Act, 1999. And if any of the rights of a trademark holder is infringed then penalty for the same are stated in the trademark Rules.

written by: Riya Dubey